Passionate about IP! Since June 2003 the IPKat weblog has covered copyright, patent, trade mark, info-tech and privacy/confidentiality issues from a mainly UK and European perspective. The team is David Brophy, Merpel, Jeremy Phillips, Eleonora Rosati, Nicola Searle, Darren Smyth, Annsley Merelle Ward and Neil J. Wilkof. You're welcome to read, post comments and participate in our community. You can email the Kats here

For the half-year to 31 December 2015, the IPKat's regular team is supplemented by contributions from guest bloggers Jani Ihalainen, Nikos Prentoulis and Mark Schweizer.

Birgit Clark is on Sabbatical till the end of the year

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Thursday, 29 August 2013

The IPKat (well this one, at least) is always excited by news of a new Patents Act, and so he was jolly pleased to read in his Twitter feed that the New Zealand Patents Bill was finally passed by its Parliament yesterday, on 28 August 2013.

Much of the previous coverage (including on the IPKat here), and the chatter from yesterday, focused on the exclusion from patentability of software. The IPKat believes that what has been agreed is the following:

10A Computer programs
(1) A computer program is not an invention and not a manner of manufacture for the purposes of this Act.
(2) Subsection (1) prevents anything from being an invention or a manner of manufacture for the purposes of this Act only to the extent that a claim in a patent or an application relates to a computer program as such.
(3) A claim in a patent or an application relates to a computer program as such if the actual contribution made by the alleged invention lies solely in it being a computer program.

(4) The Commissioner or the court (as the case may be) must, inidentifying the actual contribution made by the alleged invention,consider the following:(a) the substance of the claim (rather than its form and thecontribution alleged by the applicant) and the actualcontribution it makes:(b) what problem or other issue is to be solved or addressed:(c) how the relevant product or process solves or addressesthe problem or other issue:(d) the advantages or benefits of solving or addressing theproblem or other issue in that manner:(e) any other matters the Commissioner or the court thinksrelevant.(5) To avoid doubt, a patent must not be granted for anything thatis not an invention and not a manner of manufacture under thissection.

European practitioners will see resonances in the "as such" language, and the IPKat is given to understand that the expectation is that the approach taken will be similar to that in the UK.

Perusing the Bill, the IPKat was delighted, if astonished, to see that a patentable invention is still defined with reference to "a manner of manufacture within the meaning of section 6 of the Statute of Monopolies" (you know, this Statute of Monopolies - from 1623).

This Kat recalls that under the old (current) New Zealand law methods of medical treatment were considered not patentable as being contrary to morality, in the absence of any statutory exclusion, and is therefore not surprised to see that this position is regularised in specific exclusions:

An invention of a method of treatment of human beings by surgery or therapy is not a patentable invention.
An invention of a method of diagnosis practised on human beings is not a patentable invention.

Again, these exclusions will be familiar to European practitioners.

Naturally, a number of New Zealand firms have blogged about this development - the IPKat has consulted posts from AJ Park and Henry Hughes. And of course the software angle has been extensively covered by Florian Mueller, who has helped to counter the popular (incorrect) reporting that software patents have been "banned" in New Zealand, whereas the reality is much more nuanced.

Merpel notes that New Zealand legislative process rivals European law-making for speed - this Bill apparently started in 2008!

UPDATE 30/8/13 Thanks to Twitter commenter @nzPaulM and comment from Ken Moon (9th comment) below, the IPKat has realised that the original blog post inadvertently omitted sub-sections (4) and (5) of Section10A. These have now been added above. The essential point that New Zealand is aligning its statute with the UK jurisprudence on patentability of software seems to apply equally to these sub-sections.

Not inadvertently, the IPKat omitted the "Examples" - to a process using a washing machine and a process for automatically completing a document - as they are rather lengthy and don't seem to be especially helpful to understanding the new law. You can read the whole proposal for Section 10A including all of this material in Supplementary Order Paper (SOP) No. 237 downloadable (together with other material relating to the Bill) from the New Zealand legislation website here.

On MoM, hear, hear! In my opinion, simply the greatest definition of "invention" ever made, especially after the Australian High Court's famous NRDC decision stretched (exploded actually) the boundaries of "Morton's Rules". Morton J. never meant them to be hard and fast rules, but everybody took them as such - until NRDC. Long may MoM reign Downunder.

The original bill contained some grim reading that showed how easily politicians are swayed by FOSS ideologues, and why we must be vigilant about calling out dumb FOSS arguments:

Patentable inventionsWe recommend amending clause 15 to include computer programsamong inventions that may not be patented. We received many submissionsconcerning the patentability of computer programs. Underthe Patents Act 1953 computer programs can be patented in NewZealand provided they produce a commercially useful effect.3 Opensource, or free, software has grown in popularity since the 1980s.Protecting software by patenting is inconsistent with the open sourcemodel, and its proponents oppose it. A number of submitters arguedthat there is no “inventive step” in software development, as “new”software invariably builds on existing software. They felt that computersoftware should be excluded from patent protection as softwarepatents can stifle innovation and competition, and can be granted fortrivial or existing techniques. In general we accept this position.While the bill would provide adequate incentives for innovation,however, we are aware of New Zealand companies who haveinvested in a significant number of software-related inventions,involving embedded software.4 We sought advice on the approachtaken in other jurisdictions such as the United Kingdom and theUnited States, and whether legislation that would enable “embeddedsoftware” to be patentable might be practicable. After carefulconsideration we concluded that developing a clear and definitivedistinction between embedded and other types of software is not asimple matter; and that, for the sake of clarity, a simple approachwould be best. We received advice that our recommendation toinclude computer programs among the inventions that may not bepatented would be unlikely to prevent the granting of patents forinventions involving embedded software.We recommend that the Intellectual Property Office of New Zealanddevelop guidelines for inventions containing embedded software.

‘Embedded software’ is defined asEmbedded software is computer software which plays an integral role inthe electronics it is supplied with (e.g. cars, pacemakers, telephones, andwashing machines).

Does this not fly in the face of international accords that keep open for patentability 'all areas of technology?'

If you have something that could never be done before on a computer, and someone invents a way of doing it on a computer (through software), is this not a technological advance in its own right?

All this does is guarantee more work to those in the art of the scrivener (patent attorneys) to disguise software technology as a system that 'happens to include software, thus not the software as such.'

The invention would not be music "as such". It would be a programmable machine, programmed to generate a novel pattern of sounds. Much like a new computer game produces a novel pattern of pixel illuminations.

The original questioner (you?) asked: "If you have something that could never be done before on a computer [a programmable machine], and someone invents a way of doing it on a computer (through software [instructions]), is this not a technological advance in its own right?"

The answer should be "no", unless you accept that inventing a way of causing a pianola (or a knitting machine, come to that) to generate a novel output is a technological advance.

Your attempt at using music as a strawman is a pitiful attempt at portraying ALL software as merely doing the same thing: doing what a computer 'does.' It is a vacuous and fallacious argument. It is simply not a matter of "a novel output." And all of the 'per se's' and 'as such's' won't help you with the basic understanding that software is technological, every bit* as firmware and every bit* as hardware.

The computer program provision does not exclude program inventions from patentability. More slyly it says computer programs cannot be inventions. No doubt the Ministry of Commerce advisors think this gets around the TRIPS issue.

s.10A(4), not so far addressed might help courts. For identifying the contribution of the alleged invention it requires consideration of claim substance and not form; the problem to be solved; how the product or process solves the problem; and the advantages of solving the problem in that manner. familiar perhaps to UK practitioners.

Unfortunately all NZ governments have had little or no interest in patent law (or any other IP law) and thus while extremely frustrating it was no surprise the passage of the Bill took 5 years. it might be another year before regulations are drafted and the Act comes into force!

You seem to have missed the point. I have never suggested that ALL software is non-technical. The original question (posed by you?) asked whether novel software is necessarily a technical advance. It requires only one counterexample for the answer to this question to be "no".

A exemplary pianola analogy for a "technical" computer program would be a music roll pattern that was so arranged that it caused some part of the mechanical workings of the pianola to resonate audibly so as to enhance the musical output of the pianola. This would arguably make the pianola a "better pianola".

You do not appear to have provided any justification for your assertions that all computer programs are technological while all pianola rolls are not. Simply saying stating this repeatedly does not make you right.

Software is written to do something. That is the purview of patent protection.

It is as simple as that.

You can take an example from any category that merits patent protection and come up with a single counterexample that does not merit patent protection. Under your logic, this means that nothing is patentable.

Your logic is flawed, and seriously so.

That you think I offer "no justification for [my] assertion that [all(?)] computer programs are technological" just shows that you do not understand the nature of software. Software is created in order to do something. Software is created to interact with a machine. Software, then - by definition - is technological. I simply need no "justification." I am right not because "I say so," I am right because of what software is.

Are you saying that you create software that in fact does not do anything and is meant to not do anything? That seems most odd.

And that is an especially odd thing to say, when the next comment seemingly takes offense against patents (as if somehow patents are by and of themselves an insult against the programmer's profession).

You do realize that it is the epitome of non-professionalism to not only imbue a religious zealotry against patents into a 'profession', but to then force the entire profession to believe in such zealotry as you do, right?

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':

Gama and Pal: is the wet-wipe packaging confusingly similar?

Yesterday morning the IPKat posted this item on an ongoing passing-off action, Gama Healthcare Ltd v Pal International Ltd. in which Gama objected that Pal's wet-wipe packaging would lead people to think it was theirs.

When that Katpost went live, there were no examples of the parties’ packaging to show readers. The Kats have since received images of both, which they reproduce below, and they ask readers, through the medium of the sidebar poll below, if they think that Pal's packaging might be mistaken for Gama’s one.

Pal's packs are sold under the Medipal brand and Gama's are sold as Clinell products.

Caveat: this poll is conducted purely for the amusement of readers of this weblog. It is not mandated by the trial judge or commissioned by either party; it is not based on any methodology and it is not intended to have any evidential value at all.

Wet-wipe packaging: do you think you could pick up a packet of Medipal, thinking it was Clinell?

The IPKat's sidebar contents

Want to complain?If you feel that you have been unfairly prevented from posting a comment on one of this weblog's features, here's what you can do about it

The IPKat's cousins: some IP-friendly blogs for youThe IPKat lists his 'family' of IP blogs, some of which focus on specific rights, geographical zones, markets or interests

How many page-views?See how many times the pages of the IPKat weblog have been purr-viewed

The Kat that tweetsToo short to blog? Some news and views are still worth airing, thanks to Twitter

Want to receive the IPKat weblog by email?You can get each post, or a digest, sent direct to your favourite mailbox

Not just any old IPKatEvery so often, this feline creeps into the limelight

The IPKat's RSS feeding arrangementsFeedburner and all those other things ...

What you've been sayingHere are the most recent readers' comments on the IPKat's posts

The IPKat's Greatest Hits!Here are the five posts on the IPKat's weblog that have received the most attention from readers over the past 30 days

Has the Kat got your tongue?Some translation facilities for readers whose first language is not English, or who are just plain masochistic

Creative Commons licenceYou too can make use of this blog's contents, if you follow the rules

The IPKat ArchiveAncient posts, going back to June 2003

Want to complain?

If you have posted a comment to one of our blogposts and it hasn't appeared, it may be because it doesn't match our criteria for moderation -- essentially that readers' comments should not be obscene or defamatory; they should not consist of ad hominem attacks on members of the blog team or other comment-posters and they should be relevant to the blogpost on which they purport to comment.

If you feel that your comment should have been moderated, please email the IPKat at theipkat@gmail.com and let him know, since it may be that your comment has been misdirected into the Blogger software's Spam file.

In the event that there has been no software malfunction and that your post has been rejected, if you want to appeal against this decision please contact either (i) Dr Danny Friedmann of theIP Dragonweblog (ipdragon@gmail.com) or (ii) Professor Dennis Crouch of the Patently-O weblog (dcrouch@patentlyo.com). Danny or Dennis will review your complaint, preserving the confidentiality of your identity and will let both you and us know whether your complaint is justified.

If your complaint relates to bias or distortion, the IPKat suggests that you contact him initially, bearing in mind that he and Merpel are generally willing to host pieces by guest contributors even when their opinions are at odds with those of this blog's contributors.